Intellectual property law is good. Excess in intellectual property law is not. This blog is about excess in Canadian and international copyright law, trademarks law and patent law. I practice IP law with Macera & Jarzyna, LLP in Ottawa, Canada. I've also been in government and academe. My views are purely personal and don't necessarily reflect those of my firm or any of its clients. Nothing on this blog should be taken as legal advice.

Saturday, May 12, 2012

Georgia State On My Mind - Here's the 350 Page Judgment and a Few First Thoughts

The
University prevailed in 94 of the 99 initially alleged infringements:

Of the 99 alleged
infringements that Plaintiffs maintained at

the start of
trial, only 75 were submitted for post-trial findings of

fact and
conclusions of law. This Order concludes
that the

unlicensed use of
five excerpts (of four different books) infringed

Plaintiffs’
copyrights.

Result
– as per the Court:

Relief?

VI. Relief To Be
Granted

In light of the
findings of fact and conclusions of law

contained in this
Order, Plaintiffs are DIRECTED to file, within

twenty (20) days
of entry of this Order, the proposed text of any

injunctive and
declaratory relief they seek, together with the

rationale
supporting their request. Alternative
proposals are

acceptable. Defendants may state their opposition, if
any, and may

propose one or
more alternative orders, within fifteen (15) days

after Plaintiffs’
filing. If Defendants object to
Plaintiffs’

proposal(s) or if
Defendants suggest one or more alternative

order(s), the
rationale shall be stated. These filings
shall not

exceed thirty
(30) pages each.

Costs?

VII. Costs and
Attorneys' Fees

Section 505 of
the Copyright Act, 17 U.S.C. § 505 provides:

In any civil
action under this title, the court in its

discretion may
allow the recovery of full costs by or

against any party
other than the United States or an

officer thereof.
. . . [T]he court may also award a

reasonable
attorney's fee to the prevailing party as part

of the costs.

Both sides have
requested an award of costs and attorneys' fees

[Doc. 1 at 29;
Doc. 415 at 47 n.18; Doc. 411 at 61-62]. Consideration

of these requests
will be deferred until further order of the Court.

Fair
Use?

Here’s
the Court’s own summary of its findings on fair use at p. 86:

Summary of Fair
Use Assessment

This case
involves unlicensed copying of 75 excerpts from

Plaintiffs'
copyrighted books for nonprofit educational use by

professors and
students at Georgia State University in 2009. The

question whether
this constitutes a permissible fair use is resolved

primarily by
reference to 17 U.S.C. § 107 and the Supreme Court's

decision in
Campbell. The Court must consider all of the statutory

elements of §
107; none may be overlooked. However, other factors

may be
considered. There is no precise manner in which the elements

must be weighed
in relation to each other; however, it is paramount

that all factors
be weighed and considered “in light of the purposes

of
copyright." Campbell, 510 U.S. at 578.

Because (1) the
excerpts were used for the purpose of teaching

(including
multiple copies for classroom use) and scholarship, as

described in the
preamble to § 107, (2) the use was for a

noncommercial,
nonprofit educational use, as described in § 107(1)

and (3) Georgia
State is a nonprofit educational institution, fair

use factor one
weighs heavily in Defendants' favor.

Because all of
the excerpts are informational and educational in

nature and none
are fictional, fair use factor two weighs in favor of

Defendants.

With respect to
fair use factor three, the amount of the copying

as a percentage
of the book varies from book to book. In determining

what percentage
of a book may be copied, the Court looks first to the

relationship
between the length of the excerpt and the length of the

book as a whole.
Then, the relationship between the value of the

excerpt in
relation to the value of the book is examined. The Court

also considers
the value of a chapter in itself (rather than just a

few paragraphs).
In the case of extra long books with a large number

of chapters, a
limit on the number of chapters which may be copied is

appropriate.
Professors may well have a legitimate educational

reason for
wanting to use a chapter of a book; it is more apt to

contain a
complete treatment of a particular topic or subtopic than

would a few
isolated paragraphs. However, the convenience of using

whole chapters
from an over-length book may lead to an undue amount

of unpaid copying
in absolute terms.

Taking into
account the foregoing considerations in relation to

the books
involved in this case, the factor three conclusions are:

Where a book is
not divided into chapters or contains fewer than ten

chapters, unpaid
copying of no more than 10% of the pages in the book

is permissible
under factor three. The pages are counted as

previously set
forth in this Order. In practical effect, this will

allow copying of
about one chapter or its equivalent.50 Where a book

contains ten or
more chapters, the unpaid copying of up to but no

more than one
chapter (or its equivalent) will be permissible under

fair use factor
three. Excerpts which fall within these limits are

decidedly small,
and allowable as such under factor three. Access

shall be limited
only to the students who are enrolled in the course

in question, and
then only for the term of the course. Students must

be reminded of
the limitations of the copyright laws and must be

prohibited by
policy from distributing copies to others. The chapter

or other excerpt
must fill a demonstrated, legitimate purpose in the

course curriculum
and must be narrowly tailored to accomplish that

purpose. Where
the foregoing limitations are met factor three will

favor fair use,
i.e., will favor Defendants. Otherwise factor three

will favor
Plaintiffs.

The Court must
also consider, under fair use factor four, the

effect of the use
in question on the potential market for or value of

the copyrighted
book. Unpaid use of a decidedly small excerpt (as

defined under
factor three) in itself will not cause harm to the

potential market
for the copyrighted book. That is because a

decidedly small
excerpt does not substitute for the book. However,

where permissions
are readily available from CCC or the publisher for

a copy of a small
excerpt of a copyrighted book, at a reasonable

price, and in a
convenient format (in this case, permissions for

digital
excerpts), and permissions are not paid, factor four weighs

heavily in
Plaintiffs' favor. Factor four weighs in Defendants'

favor when such
permissions are not readily available.

The Court has considered whether unlicensed copying of
small

excerpts as contemplated by this Order would disserve the
purposes of

the copyright laws, namely, “To promote the Progress of
Science and

useful Arts, by securing for limited Times to Authors and
Inventors

the exclusive Right to their respective Writings and
Discoveries.”

U.S. Const. art. I, § 8, cl. 8. Because the unpaid use of
small

excerpts will not discourage academic authors from
creating new

works, will have no appreciable effect on Plaintiffs'
ability to

publish scholarly works, and will promote the spread of
knowledge,

the Court concludes that it would not.

(Footnotes
omitted)

Note
that the Court looks to the US Supreme Court’s 1994 decision in Campbell as the
ultimate authority regarding fair use and the interplay of the four factors. This issue arose in the recent Canadian Supreme Court K-12 case argued on December 7, 2011 and now under reserve. The issue of the status of the fourth factor and the role of Campbell became the subject of some heated discussion by Dan Glover, Ariel Katz, Bill Patry and myself recently on
this and other blogs.Once again, we have confirmation - not that it was needed - that the US "fourth factor" is simply one of four factors and in no sense the most important factor - and that, indeed, even other factors can be considered.

The
decision is 350 pages long. Though tempted, I’m not rushing to be the first to
analyze it in detail on this fine spring weekend.

70 The
availability of a licence is not relevant to deciding whether a dealing has
been fair. As discussed, fair dealing is
an integral part of the scheme of copyright law in Canada. Any act falling within the fair dealing
exception will not infringe copyright.
If a copyright owner were allowed to license people to use its work and
then point to a person’s decision not to obtain a licence as proof that his or
her dealings were not fair, this would extend the scope of the owner’s monopoly
over the use of his or her work in a manner that would not be consistent with
the Copyright Act’s balance between owner’s rights and user’s interests.

And
bear in mind that Access Copyright is refusing to provide transactional
licenses in Canada, in contrast to the CCC in the USA and arguably in
contravention of Canadian competition law. However, this point is not likely to
be vigorously pursued if it is raised at all at the Copyright Board, the way
things are now going.

Let’s
all think about what, if any, impact this might have had – or still might have –
in the Access Copyright case at the Copyright Board that appears destined to
proceed against the universities without their participation, following their
abandonment by AUCC – unless things change.